legal, trademarkWe are currently starting a new project to create a new software and we are in the process of finding a name. We found a company that has registered a trademark for the name we want to use.
Basically, that company makes mobile application while our product is a web application used to manage teams and projects.
Can we still use the name we found or we have to find another one?
Trademark execution depends on the jurisdiction of the office it was file it and where the infringement is taking place. You can have International trademarks filed with the WTO, you have national trademarks filed with offices like the USPTO and you have state level trademarks filed with the state business office. Two companies can also trademarks the same phrase if they are in two different industries. This is generally permitted, unless one of them can prove in a court of law that the use of their name by the other party is harming their business. http://www.avvo.com/legal-answers/can-i-trademark-a-similar-name-in-a-different-indu-69533.html
In your case, since it is pretty much the same industry, the next thing would be to check where the trademark has been filed by other company and what the jurisdiction is. If it is a state level trademark or has been filed in another country then you can get away. Generally it is better to avoid because it causes confusion among customers. For instance if a customer is trying to find your product online in a web search, the other brand’s listings are going to show up as well. Ideally you want to be unique with your brand name. Since you are aware that there is somebody else using the trademark and there maybe consequences if the other party objects/sues, it is a good idea to play safe and check with a lawyer first.
Well, the answer is that it depends. The standard for trademark infringement is whether there is a "likelihood of confusion" between your use of the name and others use of the name.
There are many companies out there with the same names. For example, Apple Inc (formerly Apple Computer) and Apple Corps (music company founded by the Beatles).
The primary question is what the other company does and what you do. If the other company sells windshield wipers then there won't be any confusion if you use the same name. If the other company has an app that somehow relates to managing teams, there will be confusion. There is a large gray area inbetween.
Note that when Apple Inc started, it just made computers and did not do anything relating to music. At this time, there was little possibility of confusion. Now that Apple sells music online, there certainly could be confusion between the two companies, and there was a dispute between the two companies that you can read about here.
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